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Keker & Van Nest Helps Comcast Shake Contract Claims in Networking IP Row


A Delaware federal judge dealt a blow to British Telecommunications PLC on Monday in a pair of suits claiming infringement of several of data networking patents it has licensed, tossing the corporation's contracts counterclaims against Cox Communications Inc. and Comcast Corp.

U.S. District Judge Sue Robinson granted Cox and Comcast's joint motion to dismiss the counterclaims for breach of contract and tortious interference that BT had filed against the companies in two suits alleging they infringed eight data networking patents BT licensed from Cisco Systems Inc. The judge said Cox and Comcast couldn't be held liable for breach of contract or tortious interference with respect to the BT-Cisco agreement because neither was a party to the contract.

"BT offers no evidence that the companies are related in any way to either signatory, participated in any negotiations, or attended meetings regarding the contract," the judge's order said.

The counterclaims against Cox and Comcast arose last year from an ongoing patent infringement battle BT is fighting on two fronts.

BT sued Cox in August 2010, accusing it of infringing four patents for technologies that help manage the flow of Internet traffic and voice transmissions over cable networks. BT later amended the suit to include four additional patents. Then, in September 2011, after BT threatened to add Comcast as a defendant to the original patent infringement suit, Comcast sued BT, seeking a declaration that it hadn't infringed the eight patents and that they are invalid.

Cox and Comcast have asserted that BT's ability to sue for patent infringement is limited by the terms of its licensing agreement with Cisco.

In response, BT last year filed counterclaims against the two companies for breach of contract and tortious interference with respect to the BT-Cisco licensing agreement, saying Cox and Comcast are third-party beneficiaries of the agreement, according to the opinion. The full scope of BT's arguments in support of the counterclaims was not immediately clear, as all court filings relating to them have been sealed.

Judge Robinson wrote in Monday's order that Cox and Comcast couldn't be held liable for breaching the BT-Cisco licensing agreement because neither company was directly involved in it. Neither Cox nor Comcast fell within exceptions to rules governing breach-of-contract liability, as neither had expressed intent to be bound by the terms of contract, the judge wrote.

The judge rejected BT's tortious interference claims, noting that BT had conceded that no actual breach of the licensing contract ever occurred or was even alleged against Cisco. BT suggested that the actions of Cox and Comcast have rendered it unable to perform its contract with Cisco, but offered no further evidence to support that claim, the judge wrote.

"The single statement alone is insufficient to allege that defendants unjustly procured Cisco's breach of contract," the order said.

Representatives of the parties did not immediately respond to requests for comment late Monday.

The patents-in-suit are U.S. Patent Numbers 5,142,532; 5,526,350; 6,538,989; 6,665,264; 5,790,643; 5,923,247; 6,205,216; and 6,473,742.

BT is represented by Philip A. Rovner and Jonathan A. Choa of Potter Anderson & Corroon LLP and Daniel A. Boehnen and Grantland G. Drutchas of McDonnell Boehnen Hulbert & Berghoff LLP.

Comcast is represented by Beth Moskow-Schnoll of Ballard Spahr LLP and Keker & Van Nest LLP.

Cox is represented by Mary B. Graham and Stehen Kraftschik of Morris Nichols Arsht & Tunnell LLP, John M. DiMatteo, Eugene L. Change and Marc E. Montgomery of Willkie Farr & Gallagher LLP, and Mitchell G. Stockwell and Vanessa M. Blake of Kilpatrick Townsend & Stockton LLP.

The cases are Comcast Cable Communications LLC et al. v. British Telecommunications PLC, case number 1:11-cv-00843, and British Telecommunications PLC v. Cox Communications Inc. et al., case number 1:10-cv-00658, both in the U.S. District Court for the District of Delaware.